Wednesday, October 24, 2012

TTAB Finds CURVEE, CURVEY, and CURVEEY Merely Descriptive And Confusable With CURVY, All for Clothing

The Board affirmed two refusals in each of three applications (2 x 3 = a sexfusal?) for the marks CURVEE, CURVEY, and CURVEEY for various clothing items, finding them to be merely descriptive of the goods and likely to cause confusion with the Supplementally-registered mark CURVY for overlapping clothing items. Although the cited mark is weak and the evidence showed that "curvy" is descriptive in the clothing field, even a weak mark is entitled to protection against registration of a similar mark for the same or related goods. In re Apparel Limited, Inc., Serial Nos. 85141163, 85141193 and 85141214 (October 2, 2012) [not precedential].

Mere Descriptiveness: Applicant asserted that CURVY is merely descriptive of Registrant's clothing, "designed for larger busts," but it maintained that its three marks are unique and are not the phonetic equivalent of "curvy." Dictionary definitions, third-party uses, and the cited Supplemental Registration itself demonstrated that "curvy" is merely descriptive of a significant feature or characteristic of Applicant's clothing. A slight misspelling does not turn a descriptive word into a non-descriptive mark, and the mere fact that Applicant's spellings are not found in the dictionary is not controlling.

Likelihood of Confusion: Both the applications and the cited registration include "skirts," and the applications include "pants," which are equivalent to Registrant's "trousers." In short, the involved goods are, for purposes of the 2(d) analysis, identical or closely related. There were no restrictions on the goods, and consequently the Board presumed that they travel in the same, normal channels of trade to the same classes of consumers. These factors weighed heavily in favor of a finding of likely confusion.

As to the marks, Applicant's claim that the marks may be pronounced in various ways is, "to say the least, strained." In any case, there is no correct pronunciation of a mark. [Really? What about APPLE, or BLACK CAT, or TTABLOG? Well, forget the third one. - ed]. The marks engender "substantially similar, if not virtually identical commercial impressions."

In sum, the mere difference in spelling is not enough to enable ordinary consumers to distinguish the marks.

The Board "appreciated" Applicant's argument that the registered mark is weak and is entitled to a narrow scope of protection. The evidence showed that "curvy" is descriptive in the field of clothing. However, "even a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services." And even a mark registered on the Supplemental Register may be cited under Section 2(d).

The Board proclaimed once again that there is no per se rule that all clothing items are related for Section 2(d) purposes. [It just works out that way - ed.]. To the extent that any doubt remained as to the Section 2(d) issue, it must be resolved in favor of the prior registrant.

TTABlog comment: Applicant was in a tough spot here. It obviously could not challenge the cited registration on mere descriptiveness grounds, because a mark registered on the Supplemental Register is presumed to be merely descriptive (i.e., not inherently distinctive). So one would have to allege that the mark is incapable of serving as a source indicator. That would mean proving that the mark is generic, or that there are so many third-party descriptive uses that the mark could never acquire distinctiveness. Here, Applicant's third-party use evidence was of minimal value because it provided no proof of the extent of use.

My point is that Supplemental Registrations may be difficult to cancel. They just sit there on the register like a boulder in the road to registration.